i«3 



A Few Elementary Notes 



ON THE 



LAW OF PATENTS 



BY 

WHITE & PROST 

OF SAN FRANCISCO. CALIFORNIA 



COPYRIGHT 1917 

BY 
WHITE & PROST 



PRESS OF THE JAMES H. BARRY CO. 
SAN FRANCISCO. CAL. 



mmZ;ii:B^m^. 



A Few Elementary Notes 



ON THE 



LAW OF PATENTS 



BY 

WHITE & PROST 

OF SAN FRANCISCO. CALIFORNIA 



COPYRIGHT 1917 

BY 
WHITE & PROST 



PRESS OF THE JAMES H. BARRY CO. 
SAN FRANCISCO. CAL. 



T2Z3 



/ 



3 



IC1.A476215 









SEP 25 1917 



PREFATORY NOTE. 

In submitting these brief, fragmentary notes, we feel it our 
duty to remind the reader that "a httle learning is a dangerous 
thing." As stated in Robinson on Patents: "One of the most 
common sources of error in all human affairs is the partial state- 
ment of a truth. Such a statement is correct as far as it goes, 
but if adopted and repeated by the hearer as embodying the 
whole truth, it scatters the seeds of many subsequent mistakes." 

The following notes do not purport to represent the whole truth 
in respect to the topics treated therein. They are intended merely 
as answers of a general nature to the questions of a general 
nature most frequently asked us by our clients and by attorneys 
not specializing in patent law. As a rule, general statements are 
subject to exceptions. Therefore, a correct and comprehensiye 
answer to a particular question requires a comprehensiye knowl- 
edge of all the facts and circumstances upon which the question 
is based. Xeyertheless, these notes may proye of some yalue to 
those interested in patents, although they are not intended to be 
acted on by anyone without the adyice of a patent attorney. 

WiLLi.vM K. White. 
Hubert G. Prost. 

San Francisco, California, 
September, 191". 



A Few Elementary Notes on the 
Law of Patents 



Abraham Lincoln once said that the American patent Rem^S^^ 
system is intended to "add the fuel of self-interest to the 
iire of genius." 

The power of the United States to grant to inventors 
certain exclusive privileges is derived from the following 
clause in the eighth section of the first article of the 
Constitution : 

"The Congress shall have power ... to promote 
the Progress of Science and Useful Arts, by securing, 
for limited Times, to Authors and Inventors the exclu- 
sive Right to their respective Writings and Discoveries." 
x\cting under such authority, Congress has passed four 
Acts, which have in turn been the basis of our entire 
patent system; the Acts of 1790, 1793, 1836 and 1870. 
The Act of 1870 became the basis of the present provis- 
ions of the Revised Statutes controlling patents. 

Under the English kings, various monopolies were 
granted to individuals by public letters addressed to the 
general public. From the Latin name of these letters, 
"literae patentes" is derived "letters patent," meaning open 
letters or letters addressed to the public. It is by such 
"'letters patent" that the United States grant certain ex- 
clusive privileges to inventors. 

Section 4886 of the Revised Statutes of the United ^^'hat inven- 
tions are Pat- 
States provides that : . entabie. 

"Any person who has invented or discovered any new 
and useful art, machine, manufacture, or composition of 
matter, or any new and useful improvements thereof, 
not known or used by others in this country, before his 
invention or discovery thereof, and not patented or 
described in any printed publication in this or any for- 
eign country, before his invention or discovery thereof, 
or more than two years prior to his application, and 
not in public use or on sale in this country for more 
than two years prior to his application, unless the same 
is proved to have been abandoned, may, upon payment 
of the fees required by law, and other due proceeding 
had, obtain a patent therefor." 
A patent for an invention is a contract between the partv JM-^"^ 

claiming to be the inventor thereof and the Government. 

In consideration of the inventor disclosing- his invention to 



the public, the Government grants him, for the period of 
seventeen years, the right of preventing all others from 
making or using or selling his invention. At the end of 
such seventeen years monopoly, the public is free to make, 
use or sell t\)e invention. It is to be noted that an United 
States patent grants no right to make, use or sell anything; 
it grants only the right of preventing all others in the 
United States from making-, using or selling the invention 
covered thereby. 

The law does not require the owner of a patent to make 
any use of the invention covered thereby. If the patent 
owner so desires, he may refrain from making, selling or 
using any device embodying the patented invention and, at 
the same time, prevent all others from making, selling or 
using such devices. 

Inventors. "The right of property which an inventor has in his 

invention, is excelled, in point of dignity, by no other 
property right whatever. It is equaled, in point of 
dignity, only by the rights which authors have in their 
copyrighted books. The inventor is not the pampered 
favorite or beneficiary of the government, or of the 
nation. The benefits which he confers are greater than 
those which he receives. He does not cringe at the 
feet of power, nor secure from authority an unbought 
privilege. He walks everywhere erect, and scatters 
abroad the knowledge which he created. He confers 
upon mankind a new means of lessening toil, or of in- 
creasing comfort ; and what he gives cannot be des- 
troyed by use, nor lost by misfortune. It is henceforth 
an indestructible heritage of posterity. On the other 
hand, he receives from the government, nothing which 
cost the government or the people a dollar or a sacri- 
fice. He receives nothing but a contract, which pro- 
vides that for a limited time he may exclusively enjoy 
his own. Compared with those who acquire property 
by devise or inheritance ; compared with those who 
acquire by gift or marriage; compared with those who 
acquire property by profits on sales, or by interest on 
money, the man who acquires property in inventions, 
by creating things unknown before, occupies a position 
of superior dignity. Even the man who creates value 
by manual labor, though he rises in dignity above the 
heir, the donee, the merchant, and the money-lender, 
falls in dignity below the author and the inventor. 
The inventor of the reaper is entitled to greater honor 
than his father who used the grain cradle, and the in- 
ventor of the grain cradle is entitled to greater honor 
than his ancestor, who, for a hundred irenerations, had 



used the sickle. Side by side stand the inventor and 
the author. Their labor is the most dignified and the 
most honorable of all labor ; and- the resulting prop- 
erty is most perfectly theirs.'' ^ 
As said by Francis Bacon: 

"Now among all the benefits that could be conferred 
upon mankind, I discovered none so great as the dis- 
covery of new arts for the bettering of human life. 
For I saw that among the rude people of early times, 
inventors and discoverers were reckoned as gods. It 
was seen that the works of founders of States, law- 
givers, tyrant-destroyers, and heroes cover but narrow 
spaces, and endure but for a short time ; while the 
work of the inventor, though of less pomp, is felt 
everywhere, and lasts forever." 

"Inventive genius has given to mankind most of its 
present material civilization. The magnificent flower 
of civilization, everywhere surrounding us, has opened 
from germs that were fructified from the brains of 
inventors." - 

An invention is an idea of means for accomplishing an invention, 
end. The inventive act is completed when the mental con- 
ception of an idea of means is followed by the embodi- 
ment of such idea of means in concrete form. Such con- 
crete embodiment of the idea of means is termed a reduc- 
tion to practice of the invention. The filing of a patent 
application is called a constructive reduction to practice of 
the invention disclosed therein and, for some purposes, is 
deemed the equivalent of an actual reduction to practice. 

There is no idea that cannot be verbally expressed in a 
number of ways, each expression thereof being the equiv- 
alent of every other expression of the same idea. This is 
universally true. For instance, the idea that an object is 
round can be expressed in a number of ways. The same 
idea may be expressed thus: "Every point on the object's 
surface is ecjually distant from the center of the object.-^' 
The same idea may be expressed in any of the foreign lan- 
guages. 

It follows there can be no generic expression of a gen- 
eric idea. Every expression of a generic idea is only one 
of many possible specific expressions of such idea. 

The foregoing is true in connection with practically all 
mechanical inventions which may be expressed bv the use 



1 Walker on Patents. 

2 Judge Grosscup. 



8 

of mechanical elements. Where an inventor conceives an 
idea of means, it is almost always possible to express said 
idea of means in many different concrete forms, each the 
equivalent of ever)- other. For instance, an inventive idea 
of means might be expressed or embodied in a machine, in 
which a weight is used for returning a movable part to 
normal position. However, such specific embodiment of 
the generic idea of means would constitute only one species 
of the invention. It is obvious that, in most cases, a spring 
could be substituted for the weight to perform precisely 
the same function in the machine. The machine, with a 
spring so substituted therein for the weight, would consti- 
tute another species of the generic invention. 

In the law of patents, said weight and spring would be 
termed "mechanical equivalents" : and the machine, with 
the weight therein, and the machine, with the spring there- 
in, would be equivalent expressions or concrete embodi- 
ments of the same inventive idea of means. 
Letters Patent. The value of a patent, on an invention, depends on 
whether or not it covers the actual invention, in whatever 
form it may he expressed or embodied. The patent may 
be so worded as to cover only one, of many forms, in 
which the invention can be embodied. In such a case, the 
inventor practically dedicates to the public his whole inven- 
tion, because the public, without infringing the patent, may 
freely use the invention when expressed or embodied in 
any of the equally valuable forms not covered by the 
patent. 

From the foregoing, it will be seen that an inventor may 
make an invention of great value and yet fail to derive any 
profit therefrom by reason of filing a patent application so 
drawn as t6 cover only one specific embodiment of his 
broad invention. 

The commercial value of a patent, therefore, depends 
upon two factors: 

1st. Upon the commercial value of the actual invention 
disclosed therein in respect to supplying a public want or 
need. 

2nd. UfK)n the patent covering and protecting the actual 
inventive idea of means in ever\' equivalent form in which 
the same can be embodied. 

-A patent on an inventive idea of means, capable of em- 
f>odiment in a machine, comprises a document containing: 



1. Drawings illustrating" one form of machine in which 
the invention may be embodied. ( Xote : The Patent Office 
Rules do not permit one to attempt to" illustrate all or a 
number of the various modified forms of machines in 
Avhich the invention can be embodied.) 

2. A specification constituting a description of the ma- 
chine, shown in the drawing's. 

3. Claims. 

The "claims" are the most important part of a patent. Claims. 
The breadth and scope of the monopoly, granted by the 
patent, depend upon the wording" of the claims. The 
claims define the metes and bounds of the invention of 
which a monopoly is granted to the inventor. 

A patent grants a monopoly of only that which is claimrd. 
A deed to land grants only that which lies within the metes 
and bounds set forth in the deed. 

A patent may disclose, in the drawings and specification 
thereof, a broad, pioneer invention. However, the monop- 
oly, granted by such patent, may be only one specific em- 
bodiment of such invention, by reason of the inventor fail- 
ing to claim all that he was entitled to claim. 

A chain is no stronger than its weakest link : a patent 
claim is no broader than its narrowest limitation. 

What can be but is not claimed in a patent, is dedicated 
to the public. 

Each claim of a patent is, in effect, a patent on the sub- 
ject matter thereof. One claim may be valid and another 
claim, in the same patent, be invalid. One claim may be 
infringed and another claim, in the same patent, be not in- 
fringed by the unlicensed manufacture, sale or use of a 
particular machine. 

A claim, specifvino- a number of elements combined to- combination 

: . . . . Clann. 

gether in a combination, is frequently termed a "combina- 
tion claim." The law presumes each of the elements, so 
sjiecified in a combination claim, to be old. The inventive 
act, in creating the novel combination so claimed, consists 
in bringing together, in coojierative relation, the various 
elements specified in the claim. The invention, covered by 
a combination claim, is the combinaticMi C(~>nsidere(l as an 
unity distinct from the elements composing it. Such a 
combination may be no\el nc^twithstanding each o\ the ele- 
ments thereof is old. 

A poet is entitled to coj^y right his [)t)em notwithstanding 



10 



Patent Office 
Advice Re- 
garding Patent 
Attorneys. 



Patent 
cation. 



Appli- 



it is merely a novel combination of words each of which 
is old and may be found in the dictionary. The poet's 
creative work consists in bringing together, in a new rela- 
tion, a number of old words. The combination of words, 
constituting a poem, is considered as an unity distinct from 
the words of which it is composed. 

There is a close analogy between the creative work of 
the poet and the creative work of the inventor. The poet 
may express his ideas in new combinations of old words. 
The inventor may express his ideas in new combinations 
of old mechanical elements. In the one case, it is the new 
combination of words of which a monopoly is granted by 
the copyright. In the other case, it is the new combina- 
tion of mechanical elements of which a monopoly is granted 
by the patent. 

A copyright on a poem does not grant a monopoly of the 
various words thereof, separately considered apart from the 
combination thereof constituting the poem. A patent on 
a novel combination of mechanical elements does not grant 
a monopoly of the various elements thereof, separately con- 
sidered apart from the combination thereof constituting the 
invention. 

Patent Office Rule 17 reads as follows: 

"An applicant or an assignee of the entire interest 
may prosecute his own case, but he is advised, unless 
familiar with such matters, to employ a competent pat- 
ent attorney, as the value of patents depends largely 
upon the skillful preparation of the specification and 
claims. The office can not aid in the selection of an 
attorney. . . . " 

The first step taken to obtain a patent is the filing of an 
application therefor in the United States Patent Office at 
Washington, D. C. The government fee for filing an ap- 
plication is $15.00. 

The application for a patent on an invention, capable of 
embodiment in a machine, comprises a document containing : 

1st. The inventor's formal petition for the grant of a 
])atent. 

2nd. Drawings illustrating one form of machine in 
which the invention may be embodied. 

3rd. A specification constituting a description of the 
machine shown in the drawings. 

4th. Claims. 



11 

5th. The inventor's oath as to being" the inventor. 

The Supreme Court of the United States, in the case of skiii Required 

in TVriting 

Tophff V. TopHff, 145 U. S., 169, said:- Application. 

"The specification and claims of a patent, particularly 
if the invention be at all complicated, constitute one of 
the most difficult legal instruments to draw with accu- 
racy, and in view of the fact that valuable inventions 
are often placed in the hands of inexperienced persons 
to prepare such specifications and claims, it is no mat- 
ter of surprise that the latter frequently fail to describe 
with requisite certainty the exact invention of the pat- 
entee, and err either in claiming that which the pat- 
entee had not in fact invented, or in omitting some 
element which was a valuable or essential part of his 
actual invention." 

No model of a machine is required to be filed with the ^o^ei. 
application for a patent thereon. Furthermore, it is not 
necessary to make a machine or any model thereof, before 
applying for a patent thereon. 

However, the making, use or sale of a machine for a 
period of less than two years before the filing of an appli- 
cation for a patent thereon is no bar to the grant of a 
patent thereon. It is, nevertheless, advisable for an in- 
ventor to file his application as soon as possible after the 
perfection of his invention. 

If the application, as filed, be allowed without objection, ApSfcat^ion °^ 
a patent issues thereon. Such a patent contains an exact 
copy of the drawings, specification and claims forming a 
part of the application as filed. 

As a general rule, applications are not allowed as filed. 
Upon the receipt of the application, by the Patent Office, 
it is dated and given a serial number. A notice of such 
date and serial number is immediately sent to the appli- 
cant's attorney. The application is then sent to the classi- 
fication department, wherein it is briefly examined to de- 
termine the art to which the invention relates, and from 
there it is sent to the proper examining division. There 
are forty-three examining divisions, in charge of each of 
which there is an examiner, and his assistant examiners. 
In 1916, there were three hundred and thirty-four assistant 
examiners actively engaged in considering apj^lications. 

In each examining division, the applications are ex- 
amined in the order of their respective filing dates. P>y 
reason of the examiners being insufficient in number to 



12 



promptly consider each application, an application is not 
acted on, as a general rule, imtil about four months after 
the filing of the same in the Patent Office. In many in- 
stances, the first action on the application is delayed for a 
much longer period. 

Such a delay, in the first consideration of his applica- 
tion, often works a great hardship on the inventor because, 
until said first action, he is left in the dark as to the atti- 
tude of the Patent Office toward his application. To rem- 
edy delays of this kind, it will be necessary for Congress 
to increase the Patent Office examining corps. 

Upon his first consideration of an application, the Ex- 
aminer reads it for the purpose of detecting any errors 
therein and in order to acquaint himself with the inven- 
tion therein disclosed. The claims therein are then con- 
sidered and allowed or rejected according to the Exam- 
iner's opinion as to the patentability of the subject-matter 
thereof. Ordinarily, on the first action, some claims are 
allowed and some are rejected. 

The action of the Examiner is communicated to the ap- 
plicant's attorney in the form of a letter, setting forth any 
corrections required to be made in the application and 
specifying the claims, if any, allowed and the claims, if 
any, rejected, together with his reasons for so rejecting 
them. 

To be patentable, the subject matter of a claim must be 
novel, useful and the result of an inventive act as distin- 
guished from the product of mere mechanical skill. 

Whether the production of a particular novel thing re- 
quired the exercise of the inventive faculties or required 
the exercise of only mechanical skill, raises a question 
often difficult of determination and concerning which 
Courts, patent office tribunals, mechanical experts and 
patent attorneys frequently hold widely divergent views 
and opinions. There are many patents which have been 
adjudged valid by some courts and invalid by others, by 
reason of a difference of opinion on this question of in- 
vention. 

In determining the question of the novelty of the sub- 
ject matter of a claim, the Examiner is entitled to refer 
to the whole prior art as disclosed in prior patents and 
prior printed publications. If the subject matter of the 
claim is found disclosed in any such prior patent or publi- 



13 



cation, the claim is rejected and, therefore, it frequently 
happens that the rejection of a claim is based upon some 
prior United States patent, or upon some prior British, 
French, German, Swiss, Swedish, Norwegian or other for- 
eign patent or upon some prior text-book, catalogue or 
other printed publication w^hich may have been published 
in this or any foreign country hundreds of years prior to 
the date of the apphcation. 

AMien an applicant learns that his invention is described 
in a book published hundreds of years before, he is very 
apt to approve of the following sentiment: 

''Confound those thieving ancients who are always 

stealing our modern ideas." 

Frequently a rejection is based upon the Examiner's con- 
tention that the invention is merely a combination of two 
or more disclosures respectively found in two or more 
prior patents or publications and that the combination, by 
the applicant, of such disclosures in one machine or device 
did not require invention but only mechanical skill. 

On receipt of the Patent Office letter, containing the 
Examiner's action, the applicant's attorney is compelled to 
examine any prior patents or publications, cited by the 
Examiner as the basis for his action, and determine 
whether or not the Examiner's action is justified and 
proper. 

If the applicant's attorney agrees with the Examiner's 
views, the rejected claims are immediately cancelled or 
amended in accordance with the Examiner's suggestions 
made in connection with his rejection of the claims. 

If the applicant's attorney is of the opinion that the Ex- 
aminer's action is improper and not justified by the refer- 
ences cited by him, the attorney replies to the Patent Office 
action by sending a letter containing an argument point- 
ing out the error of the Examiner's position. In re- 
sponse to such argument, the Examiner again acts on the 
case and the attorney is entitled to again reply to such 
action and so on until the Examiner either finally allows 
or finally rejects all of the claims contained in the applica- 
tion as filed or thereafter inserted therein from time to 
time by way of amendment of the application. Some of 
the claims may be finally allowed and some finally rejected. 
From such a final rejection, an appeal may be taken 



14 



T>ine of Least 
Resistance 
Menace to 
Inventor's 
Rights. 



through the various Patent Office tribunals and finally to 
the Court of Appeals for the District of Columbia. 

In some cases of a complex nature, the actions of the 
Examiner and the attorney's replies thereto are very nu- 
"merous and extend over a period of years. A copy of the 
application as filed, together with a copy of all said actions 
and replies thereto, and of the patent, as finally issued, 
constitute what is termed the 'Tile Wrapper Contents of 
the Patent." 

The broadest claims of a patent are the ones that cover 
the very essence of the invention stripped of every non- 
essential feature. As a rule, the broadest claims in an ap- 
plication are the ones most frequently rejected and the 
most difficult to get allowed. Such a situation is attribut- 
able to various reasons which cannot be properly set forth 
in these brief, elementary notes. 

The narrow claims of a patent are those that cover the 
specific embodiment of the invention in that particular 
form deemed by the inventor to be the best or preferable 
form and, therefore, a form containing valuable but not 
necessarily essential features. In other words, the so-called 
''preferable" form of embodiment is usually a machine con- 
taining valuable features, one or more of which can be dis- 
pensed with and the machine, nevertheless, successfully 
perform its functions even though less perfectly or eco- 
nomically. 

It is most important for an inventor to appreciate the 
work done by his patent attorney after the filing of the 
application. As above indicated, the prosecution of the 
application to an allowance usually involves a great deal of 
hard, conscientious work and often embraces numerous and 
lengthy arguments based upon a detailed consideration of 
a great many prior patents and publications cited by the 
Examiner as the basis for his actions. It is a conservative 
statement to say that it is the rule and not the exception 
for an Examiner to finally allow claims in an application 
which were first rejected by him, and such allowance is due 
to the persuasive and convincing arguments presented by 
the applicant's attorney. 

It is most important for an inventor to appreciate the 
fact that "the line of least resistance" for his attorney to 
follow is to always acquiesce in the Examiner's conten- 
tions and, without argument or contest, accept whatever 



15 

the Examiner, in the first instance, is willing to allow. To 
follow such "line of least resistance" means a sacrifice of 
the inventor's rights and property, but it -also means less 
work and trouble on the part of his attorney, and the in- 
ventor should be keenly alive to such situation. If an in- 
ventor expects to secure a patent granting him a monopoly 
as broad as his invention, he should expect to and be wil- 
ling to compensate his attorney for vigorously prosecuting 
the application and conscientiously presenting every point 
and argument in favor of the allowance of every claim 
which, in the attorney's opinion, has been improperly re- 
jected. 

It is also important for the inventor to appreciate the 
value of securing an allowance of not only broad claims 
but also narrow claims covering his preferred form of 
embodiment of his invention. Narrow claims are limited 
to and include features not called for by the broad claims. 
It is, therefore, much easier to anticipate a broad claim or, 
in other words, find in the prior art, a disclosure of every 
feature called for by such broad claim. Even though such 
prior art disclosure contains every feature mentioned in the 
broad claim, it may not contain the additional features in- 
cluded in the narrower claims and, therefore, will not be 
an anticipation of such narrower claims. Of course, the 
subject-matter of a claim is not novel, if all the features 
of such subject-matter are found disclosed and described 
in some prior patent or publication. When the subject- 
matter of a claim is so found in a prior patent or pubUca- 
tion, said prior patent or publication is called an anticipa- 
tion of the claim and invalidates the claim for lack of 
novelty. 

The prosecution of an application continues until all of issuance of 

Pa,tent 

the claims, remaining in the application, have been allowed 
and thereupon the application, as a whole, is allowed. 
AVithin six months after the allowance of the application, 
the Government issuance fee of $20.00 must be paid to the 
Patent Office. The letters patent are issued about three 
weeks after the payment of such fee, usually termed the 
"final fee." 

In passin"- on an application, the Patent Office does not Question of 

I'll Infringement 

consider the question of infringement, — that is, whether Not Considered 

i r 1 1 • ,. by Patent 

or not the manutacture, sale or use of the device, dis- office, 
closed in the application, will constitute an infringement 



16 



Examples Illus- 
trating- Some 
Elementary 
Principles of 
Patent Law. 



Generic Idea 
of Means. 



Best or Pre- 
ferred Forna of 
Embodiment of 
Idea of Means. 



Generic and 
Specific Claims. 



of some prior patent. The prior patents are examined 
for the purpose of ascertaining whether or not the sub- 
ject-matter of the application is novel, — that is, whether 
or not it is disclosed in such prior patents. 

By reference to the assumed development or evolution 
of such a simple "idea of means'' as is embodied or con- 
cretely expressed in a chair, we shall now illustrate a few 
of the elementary principles of patent law. It is to be 
understood that our illustrations are not intended as correct 
examples of any patent law principles other than those 
specifically mentioned in connection therewith. Questions 
of general patentability, invention, aggregation, double use, 
etc., etc., are not taken into account in giving such illus- 
trations. 

1. Let us assume that chairs had never been provided 
with casters on the legs thereof and that one, Jones, was 
the first in the art to conceive the idea of combining any 
type of chairs with any type of casters. Such a concep- 
tion would be a broad, generic abstract idea of means or 
generic invention. In applying for a patent on said in- 
vention, it would be impossible for Jones to illustrate, in 
his application, all kinds and types of casters and all kinds 
and types of chairs, yet his "idea of means'' is sufficiently 
comprehensive to embrace the combination of every type 
of chair with every type of caster, and, therefore, he 
would be entitled to a patent covering the combination of 
any type of chair with any type of caster. 

2. To secure a patent covering broadly his generic 
invention, Jones would be compelled to comply with the 
law and disclose, in his application, the preferred or best 
form of embodiment of his broad invention. Such pre- 
ferred form would necessarily be only one specific embodi- 
ment or species of the generic invention. Let us assume 
Jones selects an arm chair combined with casters as the 
best or preferred form in which to embody or express his 
idea of means. 

In his application drawings, he would illustrate an arm 
chair provided with casters and, in the specification form- 
ing a part of his application, he would describe such arm 
chair with casters on the legs thereof. 

3. Being the first in the art to combine any type of 
chair with any type of caster, Jones would be entitled to 
a Cfeneric "claim" as broad as his novel combination. 



17 

Being the first in the art to combine an arm chair with 
any type of caster, Jones would be entitled to a specific 
"claim'' limited to such specific combination. 

a. Generic Claim : In combination, a chair and casters 
attached to the legs thereof. 

b. Specific Claim : In combination, a chair, arms ar- 
ranged above and at the sides of the seat thereof and 
casters attached to the legs thereof. 

4. The relative values of broad, generic claims and of infringement. 
narrow, specific claims are due to the principles of law^ 
relating, respectively, to questions of infringement and of 
anticipation. 

A claim calling for three elements is not infringed by the 
unlicensed manufacture or sale or use of a device contain- 
ing only two of said elements. 

A claim calling for three elements is infringed by the 
unlicensed manufacture or sale or use of a device con- 
taining said three elements plus one or more additional 
elements. 

A claim calling for three elements is not anticipated by 
a prior device containing only two of said elements. 

(Xote: Like all general rules and statements, the fore- 
going are subject to exceptions, which cannot be set forth 
in such an elementary discussion as this.) 

Jones' specific claim, calling for three elements, to wit : 
(1) a chair, (2) arms thereon, and (3) casters attached 
to the legs thereof, would not be infringed by a person, 
without license, making, or selling, or using a chair pro- 
vided with arms but not with casters or provided with 
casters but not with arms. Such a chair would not em- 
body the invention covered by such specific claim, because 
it lacks one of the three elements mentioned in the claim 
and by such mention therein, made an essential feature of 
the invention covered by the claim. 

Jones' generic claim calling for only two elements, to 
wit: (1) a chair, and (2) casters attached to the legs 
thereof, would be infringed by a person, without license, 
making or selling or using a chair provided with casters 
but not with arms, because such claim does not call for 
"arms" or make "arms" an essential feature of the in- 
vention by mentioning arms as an element of the combina- 
tion covered bv the claim. 



18 

However, said generic claim, calling for two elements, 
would be infringed by a person, without license, making, 
selling or using a chair provided both with arms and 
casters because such a chair would embody the two ele- 
ments of the claim notwithstanding it also embodied, in 
addition, a third element, to wit : arms. 

From the foregoing, it is apparent that the said specific 
claim could not secure to Jones complete protection for 
his actual invention, because anyone, without infringing 
said claim calling for three elements, could make, sell and 
use chairs provided with casters even though they could 
not lawfully provide such chairs having casters with the 
third element of the claim, to wit : arms. 

If Jones only claims the combination of casters with a 
chair provided with arms, he, in effect, dedicates to the 
pubUc the right to combine casters w^th all types of 
chairs, other than chairs provided with arms, notwith- 
standing he was the first, in the art, to combine casters 
with any and all types of chairs, and, therefore was en- 
titled to a monopoly of such broad combination. 

In view of the foregoing, it is seen that the more ele- 
ments called for or specified in a claim, the narrower the 
claim becomes. A claim for two elements is broader than 
a claim specifying said two elements plus one or more 
additional elements. A claim by specifying or calling for 
twenty elements, makes every one of said elements an 
essential feature of the combination or invention covered 
by the claim. Nineteen of said elements can be used 
without infringing the claim. 

(Note: Questions, relating to mechanical equivalents, 
to the substitution of equivalents, and to ''mode of opera- 
tion" are not taken account of in the foregoing remarks.) 
Anticipation. 5, jf^ after the granting of a patent to Jones, it is dis- 

covered that a chair, without arms, but provided with 
casters, is described in a prior printed publication, Jones' 
generic claim would be anticipated by such prior dis- 
closure and therefore void, because Jones could not be 
deemed the first inventor of a combination described in a 
publication published before he thought of making such 
combination. 

However, such a prior publication would not anticipate 
Jones' specific claim calling for a third element, to wit: 



19 



Improvement 
Patent. 



"arms," because no arms are referred to or described in 
such prior publication, and, therefore, the same does not 
show that Jones was not the first one in- the art to apply 
casters to an arm chair. Therefore, the specific claim 
would not be invalidated by such prior publication. 

The foregoing illustrates the value of obtaining narrow, 
specific claims as well as broad, generic claims. 

6. Let us assume one Smith improves on Jones' in- 
vention by adding anti-friction rollers to the casters 
attached to the legs of a chair and that such rollers are 
provided with ball-bearings. Smith would be entitled to 
a patent on his improvement and could word his claims 
thereon, as follows : 

Generic Claim : In combination, a chair, casters attached 
to the legs thereof and anti-friction rollers applied to said 
casters. 

Specific Claim : In combination, a chair, casters attached 
to the legs thereof, anti-friction rollers applied to said 
casters and ball-bearings for said rollers. 

7. Smith, without a license from Jones under the infringement 

T 11 1 r 11 1 111- ^^y ^"S6 o^ 

Jones patent, could not lawfully make, use or sell a chair Patented 

embodying the Smith improvement, because, in so doing, 
he would infringe the prior Jones patent covering a chair 
-|- casters. In other words. Smith, in order to use his own 
invention, embracing a chair-^casters-j-anti-friction rollers, 
would be compelled to use the Jones invention embracing 
a chair-)- casters. However, the prior Jones patent grants 
to Jones the right of preventing all others from making, 
selling or using a chair-f-casters and, therefore, Jones, 
under his patent, could enjoin Smith from making, using 
or selling a chair-[- casters-]- anti-friction rollers. 

On the other hand, the subsequent Smith patent grants 
to Smith the right to prevent all others from making, 
using or selling a chair-|-casters-j-anti-friction rollers. 
Therefore, Smith could enjoin Jones from adding anti- 
friction rollers to the Jones patented combination of a 
chair-j- casters. 

8. The foresfoin": illustrates the fact that the d'rant of a Nature of 

. Patent 

patent is not the grant of the right to make, sell or use Monopoly. 
devices embodying the invention covered by the patent. 
The right, granted by a patent, is only the right of pre- 
venting all others from making, selling or using devices 
embodying the invention covered by the patent. 



20 

Smith would not have the rig"ht to embody his own 
patented improvement in a chair structure until after the 
expiration of the Jones patent giving Jones the monopoly 
of two of the elements employed by Smith in Smith's im- 
proved device. 

Until after the expiration of the Smith patent, giving 
Smith a monopoly of anti-friction rollers used with the 
combination of a chair-j- casters, Jones would have no 
right to apply such anti-friction rollers to the Jones 
patented combination of a chair^casters. 
Reason wiiy 9. The foregoino^ situation illustrates the reason why 

Intringement o o j 

Not Considered the Patent Office does not consider the question of in- 

by Patent . . . ^ 

Office. fnngement m passmg on an application for a patent. 

The patentability of Smith's improvement on Jones' 
prior patented invention does not depend on whether or 
not such Smith improvement can be made, sold or used 
without infringing Jones' patent. If the Smith improve- 
ment is novel, useful and the product of an inventive act, 
Smith is entitled to receive a patent thereon. 

The granting of such a patent to Smith does not con- 
flict with the monopoly granted by the Jones prior patent. 
Jones is still free to make, sell, and use the combination 
of a chair-|-casters. The Smith patent monopoly merely 
enables Smith to prevent Jones and everyone else from 
adding anti-friction rollers to the Jones combination. 

Let us assume Smith inserted, in his application, the 
following claim : 

'Tn combination, a chair and casters attached to the legs 
thereof." 

In considering the novelty of such claim, the Examiner 
would search the prior art and run across the prior Jones 
patent. On finding disclosed, in the Jones patent, the com- 
bination of a chair-^casters, he would reject such Smith 
claim on the Jones patent, as the same shows Smith was 
not the first one in the art to combine a chair and casters, 
and, therefore, was not the original and first inventor 
of such a combination. 

However, the Jones patent would not prevent Smith 
from securing a claim covering the combination of a chair 
+ casters+anti-friction rollers, because Jones does not dis- 
close any anti-friction rollers in his patent. The fact that 
the Jones patent claims the combination of a chair^- casters 



21 



does not affect the novelty of Smith's combination of a 
chair-[-casters4- anti-friction rollers. 

10. The fact that Smith cannot lawfully make, sell or 
use his patented improvement does not necessarily make his 
patent valueless. If Jones wishes to use anti-friction rol- 
lers, in the Jones patented combination, he may be willing 
to either purchase the Smith patent or take a license there- 
under from Smith on a royalty basis. On the other hand. 
Smith may be able to purchase the Jones patent or take a 
license from Jones, and thereby be in a position to law- 
fully exploit his own patented improvement. A third 
party may be willing to purchase both patents in order to 
exploit the inventions respectively covered by them. 

As heretofore stated, the foregoing claims are not in- 
tended as correct examples of all patent law principles. 
For instance, the validity of the claim for a chair^casters 
might be attacked on the ground that no invention was re- 
quired to first apply casters to a chair.* Assuming that 
casters had been previously applied to a table, the subse- 
quent application of casters to a chair might be adjudged 
a mere "double-use" or more extended use of casters and 
the Courts usually hold that such a mere "double-use" of 
a device does not amount to invention. The validity of 
the claim for a chair-]-arms therefor^ casters might be 
attacked on the ground that there was no cooperation be- 
tween the arms and casters and, therefore, the claim was 
for a mere aggregation of elements and not for a true 
patentable combination. The claim for a chair-L casters 
-|-anti-friction rollers-|-ball-bearings might be rejected by 
the Patent Office on the ground that the real invention 
was an improved form of caster, adaptable for use with 
various articles and, therefore, the chair should not be 
made an element of the claim. 

The monopoly, granted by a patent, is one entire thing 
and cannot be divided into parts except as authorized by 
the patent laws. 

The patentee may, by an instrument in writing, assign 
1st, the whole patent, comprising all the rights thereby 
granted ; or 2nd, an undivided part or share of all such 
rights ; or 3rd, all the rights under the patent within and 
throughout a specified part of the United States. 

An assignment, grant or conveyance of a patent or of 
any such interest therein, should be recorded in the 



Value of 

Improvement 

Patent. 



Exemplar 
Claims Con- 
sidered in 
Light of Other 
Patent Law 
Principles. 



Transfer of 
Patent Rights. 



Patent Rights. 



22 

Patent Office within three months after the execution 
thereof. 

A transfer of any lesser rights under a patent is a 
mere Hcense. 
Protection of Patent rights may be protected by a suit brought in 

some United States District Court for the infringement of 
the patent. In an action at law, the case may be tried 
before a jury and the plaintiff be awarded the damages 
suffered by reason of the defendant's infringing acts. The 
Court may, within its discretion, treble the actual damages 
so awarded. In a suit in equity, the plaintiff, in addition 
to recovering any damages suffered or any profits realized 
by the defendant by reason of the infringement, may ob- 
tain an injunction restraining the further manufacture, 
sale or use of the infringing device. 

It is to be noted that the use of an infringing device 
may be enjoined, as well as the manufacture and sale 
thereof. 



23 



A Few Facts Pertaining to Patents 

The term or life of a United States patent is seventeen years, 
commencing on the date of issuance of the patent. On January 
1, 1917, th'e United States had issued 1,211,380 patents, of which 
594,509 were then unexpired. Patents now are issuing at the 
rate of 45,000 a year and this rate is constantly on the increase. 

The State of California is well to the front in respect to the 
number of patents issued to its residents in proportion to its 
population. In the year 1915, California residents received patents 
in the ratio of 1 patent to every 1224 of the State's population. 
In the same year, the New York ratio was 1 to 1386 ; the Penn- 
sylvania ratio was 1 to 1945, and the ^Mississippi ratio was 1 to 
17,447. These figures entitle California to lay claim to being a 
land of invention as well as a land of sunshine, fruit and flowers. 

The value of patents is fully recognized by the largest manu- 
facturing concerns of the country and many of them maintain 
elaborately equipped experimental and research laboratories and 
patent departments for the development and protection of new 
inventions. 

To keep abreast of the progress being made in its particular line 
of industry, it is customary for such a concern to secure, as soon 
as issued, all patents pertaining to such industry. 

Infant industries receive more protection from patents than 
they do from high tariffs and to such patent protection is due 
the present wealth and prosperity of some of the greatest manu- 
facturing- organizations of the country. 

To the manufacturer, the value of patent protection is twofold. 
After expending thousands, and sometimes hundreds of thousands 
of dollars, in developing some new type of machine or apparatus, 
it is absolutely essential for him to secure patent protection 
thereon in order to enable him to obtain an adequate return on 
his original investment in such experimental work. \\'ithout such 
protection, he would be compelled to immediately meet the com- 
petition of others who, unburdened by the expense of developing 
the machine, could duplicate it and sell it at a price sufficient to 
yield them an ordinary profit but insufficient to yield the developer 
thereof any returns on his development expenditures. 

From the manufacturer's standpoint, patents are also a species 
of insurance against possible litigation. \Mien the manufacture 
of any new or modified form of machine or device is commenced, 
it is most inq-'ortant for the manufacturer thereof to carefully 



24 



consider the possibility of securing patent protection therefor 
even though, in his opinion, the exclusive right of making the 
machine may be of little value to him. If he fails to file an 
application for a patent on such new machine or device he may- 
be confronted with the following and not uncommon situation. 

Years after commencing the sale thereof, he is notified that 
the machine infringes a patent applied for months and possibly 
a year or more after he first placed the machine on the market. 
The application for such patent may have been pending in the 
Patent Ofiice for a number of years and under the law. the 
validity of the patent is not affected by anything done by the 
manufacturer after the filing date of the application. To prove 
that he was the first to make the patented machine, the manu- 
facturer is compelled to prove what he did in that regard prior 
to the application filing date. If said date be five or more years 
prior to the time his attention is first called to the patent, the 
difficulty of making such proof is apparent. The drawings and 
patterns, used in making his first type of machine, may have 
been lost: the manufacturer may not be able to locate any of 
the first machines sold by him and his later machines may differ 
therefrom in form if not in principle. He is. therefore, con- 
fronted with the necessity of basing his proofs on the oral tes- 
timony of witnesses attempting to remember the details of con- 
struction of a type of machine made years before and such 
character of proof is always deemed unsatisfactory and of little 
weight. The manufacturer, therefore, may be held an infringer 
of a patent covering a machine which was. in fact, first de- 
veloped by himself, but which fact he is unable to prove by 
sufficient evidence. 

The foregoing and not unusual predicament could have been 
avoided by the manufacturer, if he had filed an application for 
a patent on his machine as soon as the same was perfected. 
Such an application would be record evidence of his activities 
and. in the event of another party filing an application dis- 
closing a similar machine, an interference would be declared 
by the Patent Office between the applications, and the question 
of priority of invention be at once determined and the patent 
be issued to the first inventor. Furthermore, the necessity of 
proving, in such an interference proceeding, that he was the 
first one to invent the machine, would usually arise very soon 
after the manufacture and sale of his first machine and, there- 
fore, the manufacturer then would be in a position to produce 



25 

sufficient proofs of that fact which, many }'cars thereafter, 
might not be available to him. 

In view of the foregoing, the manufacturer of any new or 
modified type of machine or device should look upon the filing 
of an application for a patent thereon as a form of insurance 
against infringement suits, and very cheap insurance at that. 

In view of the large number of patents being issued annually, 
it is to be expected that a large proportion of them cover in- 
ventions of no great value. Of course, the value of a i)atent 
depends primarily upon the value of the invention disclosed 
therein. The issuance of a patent thereon, does not increase 
the intrinsic value of an inxention. The fact, therefore, that 
many patents are of no value, because the inventions respect- 
ively covered thereby, are practically worthless, should not in- 
fluence one to consider all patents ])oor inxestments. 

There is no form of investment that yields a larger return 
than a broad patent on an invention that supplies a general 
public want or need. Furthermore, the monopoly granted by 
such a patent is given ample protection by the courts. Nine 
times out of ten, the man who complains about the lack of 
]:>rotection given patent rights, is the owner of a ])atent ha\ing 
no value by reason of not disclosing an invention having any 
value or by reason of being based on an application imi)ro])erly 
and unskilfully prepared. 

r)efore investing in a patent, one should obtain expert advice ; 
1st, in respect to the intrinsic value of the invention disclosed, and, 
2'nd, in respect to the value of the patent claims as a grant of a 
monopoly of the zvliole invention. As stated before, a i^atent may 
disclose a valuable invention, but not properly or com])letely claim 
it; and the sco])e of the monopol}\ granted by the i)atent, depends 
I)rimarily upon the claims of the ])atent and not ui)()n what is 
disclosed in the drawings or is described in the specification of 
the patent. 

I^^irthermore, it is the coiiuncrrial value of the inxention that 
should be investigated. .\ patent may cover a wave-motor which 
operates successfully but, nevertheless, is a conuiicrcial failure 
due to the fact that i)ower can be gen<.'rate(l more cheaply by the 
use of oil or coal. It is estimated that the new steam plant of 
the lUiffalo General Electric Co. at Tonawanda, N. Y., will 
generate electricity from coal more cheai)ly than can be done 
from the waters of Niagara I'^alls. 

The importance of maintaining a patent system which affords 
the inventor ample protection and which, in fact, docs "add the 



26 

fuel of self-interest to the fire of genius," was well expressed by 
Mr. Edmund Wetmore of New York in his address before a 
recent meeting of the American Bar Association. Mr. Wetmore 
closed his address with the following remarks: 

"The fact that patent laws are primarily for the benefit of 
the public and not to make inventors a favored class is not as 
widely understood as it should be. Patents are granted to 
encourage the making of inventions and to insure their finally 
becoming public proi)erty instead of remaining secrets or being 
lost or forgotten. And this can only be accomplished by an 
efficient patent law. This was admirably shown by Mr. Fish 
in his paper read at the last meeting of the Association, in 
which the point was strikingly illustrated by the instances of 
those countries that had reinstated their patent laws after the 
experiment of abolishing them. A study of facts and statistics 
will show tliat patented inventions lie at the bottom of the con- 
veniences, the comforts and the opportunities of our present 
mode of life, and without which our civilization would cease 
to advance. Appealing to considerations that come home to 
all, the influence of patented inventions tends directly to bring 
down the cost of living in the three essential particulars of rent, 
food and clothing. As to rent and food, because of the vast 
extension which patented inventions have produced in the 
facilities for transportation, whereby not only are the regions 
which constitute the suburbs of our great cities brought within 
easy reach of the centers of trade and the source of employ- 
ment, but long distance transportation, particularly as to food 
products, opens up the regions where there may be a surplus 
to those in which there is a deficiency ; and as to the matter of 
clothing, the numerous and accumulated inventions relating to 
the machinery employed in the production of clothes tend to 
bring the price of actual necessary clothing down to the lowest 
figure. 

''Examples of the public benefit derived from patented in- 
ventions, familiar enough to those who have studied the sub- 
ject, might be multiplied indefinitely for the purpose of bringing 
that fact home to those who have not given it sufficient con- 
sideration, and as to the enormous results which follow from 
inventions originally protected by patents, a more striking in- 
stance cannot be found than that shown in the present gigantic 
war. There are three inventions which in a large measure 
control the conflict and have changed the whole art and strat- 
egy of war, namely, the aeroplane invented and patented by 
the Wrights, the automobile covered by numerous patents, the 
wireless telegraphy of Marconi — not to speak of the inven- 
tions relating to artillery, heavy and light, to the machine gun 
and to the rifle, some of which have been kept as government 
secrets, but the majority of which have been patented in the 
country of their origin. 

"These, as it seems to me, are some of the topics by which 



27 



a public feeling- may be aroused that must in the end check ill- 
considered legislation directed against our patent system, and 
which, if unchecked, would gradually destroy it by piecemeal." 



